Indianapolis Downs, LLC v. Philip Mazzone c/o Muzzhound and listmytimeshare
Claim Number: FA0901001244694
Complainant is Indianapolis
Downs, LLC (“Complainant”),
represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Philip Mazzone c/o Muzzhound and listmytimeshare (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <indianadowns.mobi>, <indianadownscasino.mobi>, and <indianalivecasino.mobi>, registered with Go Daddy Software, Inc.
The domain names at issue are <indianadownscasino.com>, <indianadownsgaming.com>, and <indianadownsracingandcasino.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
On February 25, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts trademark rights and alleges that the disputed domain names are confusingly similar, if not identical, to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
The detail of the Complaint is considered in the Discussion which follows below.
Respondent makes no reply to Complainant’s claim to trade mark rights or its allegations of confusing similarity.
Respondent asserts rights in the disputed domain names “because they were offered as "available" in the registrar.”
Respondent denies having acted in bad faith “because I currently have the domain names parked at one of the registrars website to monitor traffic in the form of clicks that the domain names receive for possible future use and that is the "only" reason they are parked at the registrars site.”
The Response does not otherwise bear on the matters to be considered under the Policy.
is a company that owns and operates horse racing and gaming facilities in
2. Respondent does not specify its business but appears to deal in domain names.
3. Respondent is using the disputed domain names to resolve to parking websites that display links to third-party websites promoting goods or services which are either unrelated to, or in direct competition with, those provided by Complainant.
4. Respondent asked for consideration of US$1.7 million for transfer of four of the disputed domain names to Complainant.
5. There is no relationship between the parties, nor has Complainant authorized Respondent to use its trademark or any domain name incorporating it.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Policy ¶ 4(a) requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
As a threshold matter, Policy ¶ 4(a)(i) requires Complainant to show rights in the relevant trademarks.
Complainant claims common law trademark rights in the words INDIANA
DOWNS. Policy ¶ 4(a)(i)
does not require proof of a registered trademark if Complainant can demonstrate
its common law rights through secondary meaning. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy); see also
The issue is whether Complainant has done enough to show common law trademark rights in the words INDIANA DOWNS. Complainant references decisions under the Policy made by panelists of the other major forum administering the UDRP, the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO has also published a so-called “Overview of WIPO Panel Views on Selected UDRP Questions.”
That Overview poses the Q&A of relevance to the discussion here:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Uitgeverij Crux v. W. Frederic Isler, D2000-0575 (WIPO
Skattedirektoratet v. Eivind Nag, D2000-1314 (WIPO Dec. 29,2000) Transferred.
Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO
Australian Trade Commission v. Matthew Reader, D2002-0786 (WIPO
Decisions of the National Arbitration Forum have underscored those same points.
Complainant makes a bald claim to common law rights in the INDIANA DOWNS mark and the Panel is reminded of what was said in Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003):
Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.
The evidence which might support the claim to common law rights is limited to examples of the trading name INDIANA DOWNS; a presence at the website www.indianadowns.com; and pending US Federal trademark applications.
It is well established by prior decisions under this Policy that a pending application for trademark registration does not establish rights for the purposes of Policy ¶ 4(a)(i). Complainant refers only to recently filed applications for registration which are not in evidence and in any event unlikely to have issued at the time of this decision.
Five pages from the website www.indianadowns.com are in evidence. They are of limited assistance to the Panel, especially since of the many links to drill-down pages, one entitled “About Us” has not been included. The three pieces of information of note are (1) that the words “Indiana Downs” (with and without a logo element) appear prominently on the homepage; (2) that “Indiana Downs” seems to be the name of Complainant’s racing and betting venue and not the name of the place where it is located. Should the name have had geographical significance, Complainant would have faced an increased burden to show secondary trademark significance; and (3), that the web pages carry a 2002 copyright notice and from which it might be reasonably deduced that the website has existed in some form for seven years.
Otherwise, the uncontradicted statements of
relevance in the Complaint are that all of Complainant’s facilities are
operated under the INDIANA DOWNS name, with the possible exception of a gaming
Taken together, the Panel finds that Complainant has done just barely enough to establish rights in the trademark INDIANA DOWNS.
That said, the Panel has no hesitation in finding the following disputed domain names to be either legally identical or confusingly similar to the trademark INDIANA DOWNS:
case, the gTLD “.com” or “.mobi” is trivial and can be ignored. In each case, the domain name wholly
incorporates Complainant’s trade mark.
The added words “casino”, “gaming” and “racing
and casino” are purely descriptive within the context of Complainant’s
business and the omission of spaces between the words is inconsequential. See, Vin Diesel v. LMN a/k/a L.M.
Nordell, FA804924 (Nat. Arb. Forum
The Panel accordingly finds that Complainant has satisfied Policy ¶ 4(a)(i) in relation to the disputed domain names <indianadowns.mobi>, <indianadownscasino.mobi>, <indianadownscasino.com>, <indianadownsgaming.com> and <indianadownsracingandcasino.com>.
So far as the remaining disputed domain name <indianalivecasino.mobi> is concerned, there is no respectable argument that it is confusingly similar to the trademark INDIANA DOWNS, nor rightly does Complainant press such an argument. Instead, Complainant states that in January 2008 it entered into a written agreement with Live Holdings!, LLC, owner of a US Federal trademark registration for “LIVE!”, under which Complainant would be licensed to use the “LIVE!” mark in relation to the new casino project which would be named INDIANA LIVE! CASINO.
The position of a trademark licensee under Policy ¶ 4(a)(i) was also considered by the WIPO Overview referred to previously, the pertinent Q&A being:
Majority view: In most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP.
Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, D2003-0624 (WIPO
Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, D2003-0796 (WIPO
Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc., D2003-1027 (WIPO
Minority view: A complainant that holds a non-exclusive trademark license does not have rights in a trademark under the UDRP.
NBA Properties, Inc. v. Adirondack Software Corporation, D2000-1211 (WIPO
The “Trademark License Agreement” between the Complainant and Live
Holdings! LLC is undated but stated to be effective as from January 2008. It is a non-exclusive license but the Panel
is unconcerned by that in spite of the WIPO minority view. Aside from the recitals to the agreement,
there is no further evidence that “LIVE!” is a Federally registered trademark,
however the Panel is entitled to accept
reasonable allegations and inferences set forth in Complaint as true unless the
evidence is clearly contradictory. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
Absent any contest by Respondent, the Panel finds that Complainant has
rights of a sort in the trademark
Complainant has the burden to establish that Respondent has no rights
or legitimate interests in the domain name.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate rights
or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
Notwithstanding the lack of a response to Complaint, the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The WHOIS data does not support any argument that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trade mark rights in any of the names. Complainant has stated there to be no relationship between it and Respondent.
Respondent is not using, nor has it presented evidence of any
demonstrable preparations to use the disputed domain name in connection with a bona
fide offering of goods or services.
The only use is bad faith use, as to which see more below. See Fox
News Network, LLC v. Reid, D2002-1085 (WIPO
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in any of the disputed domain names, and that Respondent in failing to reply has not discharged the onus which fell to it.
The Panel finds that Respondent has no rights or legitimate interests in the domain names and so Complainant has satisfied the second limb of the Policy.
Policy ¶ 4(b) sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
noteworthy about Policy ¶ 4(b)(i)-(iv) is that they are all cases of both registration
and use in bad faith. In this case, Complainant
has relied specifically on Policy
¶ 4(b)(i). Submitted
with Complaint was an e-mail from Respondent offering to sell the <indianadownscasino.com>, <indianadownscasino.mobi>, <indianadownsgaming.com>, and <indianalivecasino.mobi> domain
names for US$1.7 million. Respondent
objects that it was Complainant who first approached Respondent to purchase the
domain names and that the price was marketplace consideration. Dismissing that objection, Panel
takes account of the numerous formative decisions which have held it unnecessary
for a respondent to make the first approach. Panel also underscores the fact that free
market pricing is only relevant to generic or other domain names registered in
good faith. See Marrow v. iceT.com, D2000-1234 (WIPO
Panel finds that Respondent’s actions fall squarely under Policy ¶ 4(b)(i) with the result that the <indianadownscasino.com>, <indianadownscasino.mobi>, <indianadownsgaming.com>, and <indianalivecasino.mobi> domain names were all registered and used in bad faith.
That leaves unresolved the issue of bad faith
in relation to <indianadowns.mobi> and <indianadownsracingandcasino.com> in
relation to which Complainant seeks to apply Policy ¶ 4(b)(iii) and (iv). In
particular, Complainant asserts that Respondent is using the disputed domain
names to resolve to websites that contains links for third-party websites, some
of which directly compete with Complainant, thereby disrupting Complainant’s
business and constituting bad faith registration and use pursuant to Policy ¶
Panel is in agreement with that argument.
See Puckett, Individually v.
Miller, D2000-0297 (WIPO
Additionally, Complainant submits that the websites which resolve from these disputed domain names display advertisements and links to third party websites and from which Respondent receives pay-per-click revenue, with the result that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Again, the Panel agrees with that submission. The likelihood of confusion has already been found. Respondent admits to parking the disputed domain names with a view to testing traffic. The implication of financial gain is more likely than not.
Accordingly, the Panel finds that all of the disputed domain names were registered and used in bad faith and that Complainant has satisfied the third and final limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indianadowns.mobi>, <indianadownscasino.com>, <indianadownscasino.mobi>, <indianadownsgaming.com>, <indianadownsracingandcasino.com>, and <indianalivecasino.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 11, 2009
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